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Saturday, January 30, 2010

Civil Procedure Code, 1908

Order 39 Rules 1 & 2

Trade mark SUNSTOP used by plaintiffs defendants claming to have coined this word after research.
Action for passing off .

Crucial facts noted by court for grant of injunction "it is clear that the defendant's product arrived in the Indian market, earlier than the plaintiffs'. But the first plaintiffs product was earlier than that of the defendant's product in the world market."

Further held repelling the arguments of plaintiff for grant of injunction on basis of transborder reputation court held. " Even if the first plaintiff is presumed to have achieved a tansborder reputation, for the purpose of argument, the balance of convenience does not appear to be in favour of the plaintiffs for the grant of an order of injunction. As stated earlier, the defendant applied for the registration of the Trade Mark in India in August 2005 and obtained a Drug license in November 2005 and launched its product in May 2007. The plaintiffs have not produced any proof to show that they had any intention to appear in the Indian market till October 2007. There is no document to show that the plaintiffs had an intention to arrive, even in 2005 or 2006, but that by force of circumstances, they could actually arrive only in October 2007." it is hard to conceive that the first plaintiff had established a transborder reputation that entitle the plaintiffs to an order of injunction. The plaintiffs have failed to produce any evidence to show that they had at least undertaken a blitzkrieg sales promotion campaign in India, at any time prior to the actual arrival of their product in November 2007 Application for injunction therefore dismissed.

Section 10 CPC

"It is seen that the bar under Section 10 of the Code is only to the Court proceeding with the trial of the suit and not with the hearing of any interlocutory applications. This is clear even from the plain language of Section 10. It merely says "no Court shall proceed with the trial of any suit".

Appellants had unsuccessfully approached the High Court and Honble single judge dismissed application of plaintiffs for interim injunction for restrainig the defendants from use of trade mark SUNSTOP as it had transborder reputation.. Reported as 2009 (41) PTC 234(Mad.)

HELD By DB "multinational corporations, which have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be, who is first in the market. In this case respondent passes the test.

Appellate court would not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material.

It cannot also be lost sight of that in criminal prosecution there is waste of public funds and time of courts. For this reason also in every case of perjury the court would not mechanically take cognizance or direct prosecution. Prosecution should beordered only when it is considered expedient and in the interest of justice to punish the delinquent. Every incorrect or false statement does not make it incumbent on the court to order prosecution.

This court in Rawal Singh v. Quality Stores, AIR 1986 (Delhi) 236 in spite of finding a document having been fabricated, yet dismissed the application under Section 340 of the Cr.PC finding it not to be a fit case for recourse to any such action. In my view, the application under Section 340 of the Cr.PC at this stage if allowed would give a handle to the defendants against the plaintiff and would give unfair advantage to the defendants over plaintiff in the suit proceedings. It is still to be investigated and found out by this court as to whether the plaintiff had devised improvements I modifications over and above the drawings of CMERI and if so whether the defendants have copied I infringed the said drawings of the plaintiff. Allowing the application at this stage would tantamount to this court returning finding that the drawings of the plaintiff are the same as that of the CMERI. While the proposition in R. Karuppan (Supra) & Mahila Vinod Kumari (Supra) cannot be disputed, it cannot also be lost sight of that too frequent prosecutions for such offences tend to defeat its very object. It is only in glaring cases of falsity where conviction is highly likely that the court should direct prosecution.

Honest concurrent user as to the trade mark "GEMCAL". Suit for permanent injunction, passing off and rendition of accounts on the basis of the prior user filed by appellant was dismissed.

HELD Both the parties have been selling products under the said mark for over two years prior to the notice sent by the plaintiff to the defendant in February 2003. The actual use by both parties has been thus almost concurrent except for the period of about three months for which the plaintiff was selling its product prior to sale by the defendant till the first notice was sent by the plaintiff to the defendant. As the mark has not been registered in the name of either party, the search in the trademark registry also did not yield any result in this regard. No instances of confusion between the products of the parties have been shown from any materials on the record. We had also seen the labels on the small boxes of the medicine manufactured by the appellant and respondent under the said mark which showed that they were visually distinct from each other. None of the parties were the registered owners of the trademark .

This clearly shows that the appellants were only creating a false image so as to marginalize and scuttle the functioning of a small time pharmaceutical manufacturer only on account of the fact that the appellant was a leading pharmaceutical company. Therefore, this contention of the learned counsel for the appellant that the respondent was not a bona fide concurrent user or that it had not taken the plea of concurrent user or that it was indulging in passing off of its pharmaceutical preparations in the name of pharmaceutical preparations of the appellant is not tenable in law.

Dispute as to use of Trademark/trade name ROLEXby the Defendant No. 2 who is carrying on business in the name and style of 'ROLEX Jewellery House' whereas Rolex watches have acquired a status as enjoyed by the jewellery.

HELD The application of the plaintiff for interim relief restraining the defendants from dealing in artificial jewellery or in any other product bearing the trademark /trade name ROLEX or any deceptive variation thereof is allowed. Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years it cannot now be said that a trademark which is very well known elsewhere would not be well known here. The test of a well known trademark in Section 2(zg) is qua the segment of the public which uses such goods. In my view any one in India, into buying expensive watches, knows ofROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs Idemands of consumers in different countries, the well known international brands which were earlier available at prices equivalent to prices in country of origin and which owing to the exchange rate conversion were very high, have adapted to the Indian situation and lowered prices. A large number have set up manufacturing facilities here and taken out several variants. Thus, merely because today the price of a ROLEX watch may be much higher than the price of items of jewellery of the defendants as argued, cannot come in the way of the consumer still believing that the jewellery is from the house of the plaintiff. Also, there can be no ceiling to the price at which the defendants will continue to sell their jewellery. The defendants have claimed to be selling rolled gold jewellery; with the price of gold soaring, there is no certainty that the pieces of artificial jewellery of the defendants would not also be in the same range as the watches of the plaintiff. Even otherwise, the trend in modern times has been towards artificial I semi precious jewellery. In fact, the attraction to gold is confined to this part of the world only. In India also today there are several brands of artificial jewellery I semi precious jewellery whose brand value and I or prices are quite comparable to the gold jewellery of the conventional gold smiths.

The plaintiff has in reply to the additional affidavit of the defendant stated that jewellery and watches are allied/cognate, more so since both are items of adornment and are typically sold to customers through common trade channels of retail, etc. The affidavit on behalf of the plaintiff also cites TITAN, HARRY, WINSTON, SEIKO and CHOPARD which though originally engaged in the business of watches have ventured into jewellery or vice versa. Even otherwise, in my view watches Iclocks have ceased to be an item merely for knowing the time or a utility or a necessity. A large cross section of the population is today carrying on their person cell phones all the time. The cell phone invariably shows the time also. The need, if any, of the watch/clock for knowing the time is thus met. However, the watches continue to be marketed and sold. The reason being that over the years the watches have acquired a status as enjoyed by the jewellery. The watches are worn and clocks adorn the houses as a symbol of status. The watch / clock has metamorphosed from a simple instrument comprising of two needles I heads in a metallic case to intricate designs I shapes and which can besides on the wrist be worn as a locket, arm band and designer watches. This is quite evident from the advertising of watches and clocks. Today the stress in marketing I advertising thereof is more on its looks and ornamental value rather on its machinery. Gone are the days when before procuring a watch its longevity was enquired. Today watches are increasingly being used as a gift/novelty/ souvenir. The purpose for which jewellery is worn is being met by watches also. In fact, watches are one of the few pieces of jewellery available to the male, half of the population. In the city of Delhi also, many expensive brands of watches are sold through retail outlets of jewellers. The jewellers incorporate a watch in designs of their jewellery. [Para 21] The goods of the plaintiff may lose their sheen to the strata of the society for which they are intended if such strata finds the goods in the same brand name even though not from the house of the plaintiff being available for a much lower price. The goods of the plaintiff would then cease to be a status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the plaintiff. Having found a prima facie case in favour of the plaintiff and irreparable injury to be caused to the plaintiff by allowing the defendant to continue using the trademark, I also find the element of balance of convenience to be satisfied in the present case. The registration of the mark of the plaintiff is over 90 years prior to the claimed commencement of the use by the defendant. Even if the defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of opposition is of no avail. The mark has got no relation to the jewellery being marketed by the defendants. Unless the defendant is deriving any advantage of the goodwill /brand value of the plaintiff and which it is not entitled to, it ought not to make any difference in the business of the defendants if the said jewellery is sold under a mark other than ROLEX.

With respect to arguments of the defendants of the claim being barred by time, infringement is a continuing cause of action and the defence of Limitation Act is not available. Similarly, there can be no estoppel against the statute. With respect to latches, acquiescence and waiver, such defence is available only when some positive act of encouragement is shown on the part of the plaintiff. Not only no such positive act shown in the present case but the opposition filed by the plaintiff to the application for registration of the defendant ought to have warned the plaintiff that the plaintiff is not allowing the defendant to use the mark. The case of infringement having been made out, the said pleas have no meaning. As aforesaid nothing to show any sales by defendant under the mark ROLEX, for prior to 2002 has been filed. Since then, the opposition is pending. The said period cannot be relied upon by the defendant for pleading acquiescence and waiver.

A detailed chart has been produced by the Defendant, which the Plaintiff has been unable to counter, which shows the history of the processing of the application by the Plaintiff in the US Patent Office. It shows that after the filing of Form 3 in India i.e. on 21st June 2001 and prior to the date of filing of reply i.e. on 19th October 2005 there were a series of developments in the US patent application. The examination report in the US is called as an Office Action. The final Office Action was prepared on 26th July 2001 whereby claims 1 to 8 and 10 to 16 were rejected. In response thereafter on 25th September 2001, the Plaintiff carried out a preliminary amendment of the claims. On 15th January 2002 some of these claims were rejected. A response was filed thereto by the Plaintiff on 8th February 2002. There was another non-final Office Action on 2nd July 2002 where again Clauses 1, 3 to 8,10 to 15 and 17 to 22 were rejected. There was yet another final office action on 19th November 2002 after the Plaintiff had sought to respond to the rejection by the earlier Office Action. The Plaintiff also filed an appeal on 18th February 2003 while simultaneously responding to the final Office Action of 19th November 2002. There was a final Office Action on 21st December 2004. From the Examiner Report of 20th June 2005 it is apparent from the chart that there were several developments in the US Patent Office Action which obviously did have a bearing on the examination of the application by the Indian authorities. When, by the letter dated 13th September 2004 (delivered to the Plaintiff on 20th October 2004), the Controller of Patents was asking for "details regarding the search and I or examination report in respect of same or substantially same invention filed as referred to in Rule 12(3) of the Patents Rules 2003 in respect of same or substantially same inventions filed in any one of the major patent offices, such as USPTO, EPO and JPO etc." the Plaintiff obviously was required to furnish the above details. The Plaintiff itself does not deny that it did not do so. The filing of the international search report in June 2001 was not in compliance with the above requirement.

It is not possible to accept the submission, made by referring to the Halsburyfs Laws of England, that since the omission to furnish particulars is not serious enough to affect the grant of the patent, it did not impinge on its validity. Section 64 (1) (j) and (m) indicate to the contrary. Further under Section 43 (1) (b) a patent can be granted only when the application has been found not to be contrary to any provision of the Act. It cannot be said that the omission to comply with the requirement of Section 8 (2) was not serious enough to affect the decision of the Controller to grant the patent to the Plaintiff. The information, if provided, would have enlightened the Controller of the objections raised by the US patent office and the extent to which the Plaintiff had to limit its claims to the torus shape of the compression spring, which was a key feature of the subject device. Had the Controller been informed of the Plaintiff?s own patent No. 3932005 dated 13th January 1976, he would have been called upon to examine if that patent taught the use of a toroidal shape of a compression member and whether therefore the subject device was an inventive step within the meaning of the Act.

Under the amended Section 48 (1) of the Act, the patent granted shall, where the subject matter of the patent is a product, give the patentee the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India. Likewise, where the subject matter of the patent is a process, the patentee would have the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, as well as from the act of using, offering for sale, selling or importing any product obtained directly by that process in India. The change is therefore, that under the amended Section 48 a right is given to the patent holder Plaintiff, to prevent third parties from making, selling or offering for sale, the product for which such patent has been granted without the prior consent of the patent holder. The amended Section 48, however, does not in any manner change the position as regards the validity of the patent itself. It would still be vulnerable to challenge in terms of Section 13 (4) read with Sections 64 and 107 of the Act. A similar conclusion has been arrived at in Bajaj Auto Ltd. v. TVS Motor Company Ltd. (supra).

A plain reading of the above provision is that the patent in respect of the subject device "may be used by or on behalf of the Government for the purpose merely of its own use." This is an implied condition of the grant of patent. In the circumstances, if the government through the Ministry of Railways has itself supplied the drawings to the prospective suppliers and asked them to supply side bearing pads in conformity with those drawings, it cannot possibly be said that there is an infringement by either the Railways or its contractor of the patent. In the present case, the Plaintiff has also participated successfully in the very tender in which the Consortium of the defendants has been awarded a small percentage of the contract for supply of side bearing pads. It knew of the above stipulation and has not chosen to question it till the tender was finalised and the contract awarded. The Plaintiff, by participating in such tender, must be taken to have consented to the use of its patent by both the Railways as well as any supplier of the Railways to whom the contract for supply was to be awarded. It is also not in dispute that the Defendants have formed their Consortium only for supplying the subject device to the Railways. Although Section 156 of the Act states that patent will bind the Government, that provision has also been made "subject to the other provisions contained in this Act." A harmonious reading of Sections 47 and 156 of the Act would indicate that the object is not to involve the Government or its department or a contractor acting on its behalf in any litigation involving infringement of patent when the product or process in question is for the "own use" of the government. This is a price that the patent holder pays for getting a sizeable chunk of the contract, in this case 95%, which is virtually a monopoly. Where it is not for the governments own use, or where the Government supplies the drawings of c. patented product without the knowledge or consent of the patent holder, then Section 156 would permit enforcement and protection of the patent even against the govern ment.

For the above reasons, this Court is not satisfied that the Plaintiff has been able to make out a prima facie case for the continuation of the interim injunction in its favour. As will be seen hereafter, the balance of convenience at this stage also appears to be in favour of the Defendants 2, 3 and 4 for not granting an interim injunction in favour of the Plaintiff. Balance of convenience 55. The finalised tender document has been placed on record. What has been awarded to the Plaintiff is 95% of the the, quantity of the device to be supplied to the Railways. In fact Clause 7 of the "instructions" appended to the tender itself made it clear that "Item is reserved for bulk procurement for RDSO approved sources. Others can be considered for developmental order." What the Consortium has been awarded is the "developmental order" which is barely 5% of the total quantity. If the object of the Act is to ensure that the patent holder has the exclusive right to commercially exploit the patent, then that object is more or less achieved in the present tender as well, notwithstanding Section 47 of the Act. By refusing an injunction, while still imposing conditions on the Defendants 2, 3 and 4 to maintain accounts, the Court would be ensuring that in the event of the Plaintiff succeeding, it will be compensated even as regards the 5% quantity. In the above circumstances, the balance of convenience is not in favor of grant of an interim injunction as prayed for by the Plaintiff.

HELD The question which arises is that should this court come to the rescue of a plaintiff whose case is steeped in such illegality. The answer necessarily has to be in negative. The present is a case where the plaintiff as well as the defendant against whom the relief has been claimed are both not entitled to the property which is of a company in litigation. The witness of the plaintiff in his affidavit by way of examination in chief also supports the said view. From his affidavit, it is not borne out and is not believable that the plaintiff at the time of entering into the agreement was not aware of the illegality of the transaction. The plaintiff as a trade person is presumed to know of proceedings for winding up having been initiated against Magnasound and it is unbelievable that the plaintiff while acquiring the copyrights of Magnasound under the agreement dated 17th June, 2004 but through the defendant No.3 was not aware of the reason therefore.

Doctrine of pari delicto potiar est conditio

" the courts will refuse to enforce an illegal agreement at the instance of a person who is himself a party to an illegality or fraud, in detail."

Suit dismissed with exemplary costs copy forwarded to Official Liquidator.

HELD The mere fact that a website is accessible in a particular place may not itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely passive but is interactive permitting the users not only to have access to the contents thereof but, also subscribe to the services provided by the owners / operators, may in certain circumstances create jurisdiction in the court of that place where the website is accessible. Where the website is interactive, the level of interactivity becomes relevant and in cases of limited interactivity such interactivity may not be sufficient for a court to exercise jurisdiction.

In the present case, the website www.expresspharmapulse.com containing the information of the defendant company and also information regarding the drug Tadarich is passive in nature. It has no section for subscription to its services and the options which could be exercised by subscriber. This information in no manner can be said to be inviting any subscription from anyone including the consumers.

It is pertinent to mention here that the defendant company has dis-continued with its product "Tadarich" and instead they are manufacturing drug Tadalafil in the brand name of Tadasip which does not include the alleged trade mark "CIALIS" owned by the plaintiff.

As discussed above, the website proved on the record does not indicate that the defendant invited any subscription from anyone including Delhi for supply of their product.

Therefore, it is concluded that the website containing the information of the defendant company and its product "Tadarich" in no manner can be said to be interactive permitting the users, not only access to the contents thereof but, also subscribe to the services provided by the defendant. Even if it is taken that a limited interactivity is there in the information, this by itself is not sufficient for this court to exercise its jurisdiction.

Friday, January 29, 2010

TRADE AND MERCHANDISE MARKS ACT, 1958

Section [28.] Rights conferred by registration.

Plaintiffs trade mark MICRONIX and that of the defendant MICROTEL. Neither visually nor phonetically MICRONIX and MICROTEL have any similarity though name of both the trademarks starts with the word 'MICRO'. Micro is a generic term as it refers to state of art technology and cannot be monopolised by any person as both the parties are in same trade using micro technology as in every electronic and electrical items, micro chips are used and that is why both the articles cannot be confused as to their source or origin by use of word "MICRO" as a prefix to the mark or trade name. Even from the look the style and colour combination and get up of both the trademarks are entirely different and there is not even a remotest similarity.
So far as the letters of the word "BOOSTER" and the word "R" are concerned these have such similarities, which in spite of trademark being little different because of microchip technology, which are definitely deceptive and confusing. Defendant can be injuncted only from using the word "BOOSTER" in the same style as being used by the plaintiff and in no other respect.

Synopsis Plaintiff, the registered proprietor of the trade marks and the first person to adopt and use the same - Defendant failed to file written statement - Allegations deemed to be admitted.
Plaintiff, the registered proprietor of the trade marks along with the device of a lamb constituting original artistic work within the meaning of the Copyrights Act, and the first person to adopt and use the same. Defendant, an ex-employee of plaintiff, failed to enter appearance despite a valid service. They also failed to file written statement in rebuttal of the allegations made in the plaint. The allegations in the plaint are deemed to be admitted.
Accordingly, a degree for permanent injunction is passed in favour of the plaintiff and against the defendants restraining them from manufacturing, selling and offering for sale directly or indirectly dealing in Blankets, Shawls, Lohis and other woollen piece made goods under the trade mark KASHGARI and device of a Lamb as well as the mark KASHGIRI as part of their trading style and from any other mark or device which is deceptively similar to that of the plaintiffs trade mark and device.

Wednesday, January 27, 2010

Trade Marks Act, 1999

Section 27

Counterfeit products being manufactured by defendants. Commission also appointed.

HELD the operators such as the defendants frequently change their place of business and do not keep any account books of such surreptitious activities. No purpose would be served directing the defendants to render accounts. However following the principle laid down in Microsoft Corporation v. Yogesh Papat, 2005 (30) PTC 245 (Del) holding that the plaintiff would be-entitled to damages for the reason that it would be futile to direct the defendants to render accounts for the reason of the defendants carrying on business surreptitiously and in Time Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3 (Del) holding that where infringement is found, punitive damages should follow to discourage such law breakers, damages in the sum of Rs. 5 lac are awarded to the plaintiffs and against the defendants. The defendants having indulged in an action of infringement, passing off cannot avoid liability in damages merely for the reason of remaining ex-parte. Accordingly, besides the relief of permanent injunction, a decree for damages in the sum of Rs. 5 lac is also passed in favour of the plaintiffs and against the defendants.

Application for placing on record additional documents in the rectification application . Appellate Board has liberty and discretion to try and decide whether de novo proceeding or proceeding from the stage the matter was transferred should be held. No specific order passed by the Board in this regard .

HELD Normally, this Court would not have interfered with the order passed by the Appellate Board in exercise of jurisdiction under Article 226 of the Constitution of India. However, in the impugned order dated 30th June, 2006 several aspects/facts which are relevant and material for the decision of the application have not been taken into consideration. The errors pointed out are relevant and relate to the decision making process by which the final conclusion has been arrived at.

HELD The Plaintiff PPJPL has perhaps been aware that PP by itself has no distinctiveness even for the jewellery trade. PPJPL has used those letters in combination with the word "Jewellers" or the letter "J" to form the marks PP Jewellers and the logo PPJ. It used the same pattern for the real estate business when it adopted the marks PP Towers and logo PPT. Likewise, PP Buildwell cannot claim distinctiveness for the letters PP except when combined with the word "Mall" or "Shopping Mall' for which marks it holds registrations. The Plaintiffs contend that in a written statement of PP Buildwell dated 2nd August 2008 (which incidentally is not on record) it has been admitted in para 9 at page 17 that the mark PP can be appropriated as a trademark and service mark; that PP is a trade mark and service mark and that PP is an essential part of its impugned trademark. This court is unable to agree with this submission.

HELD The law which emanates from reading of section 58 & 59 Paatents Act is quite akin to the law of amendment. The jurisdiction necessary to allow the amendment of a claim in the specification vests with the High Court. The claims can be amended and such amendment may be allowed provided that is it clarificatory or elaborative in nature and also, that it does not alter the scope of the claim or introduce any new claim in the invention which was not present in the original invention. Thus, the scope of enquiry in relation to amendments in the patent claim is limited to the extent as to whether it introduces any new claim which extends the scope of the monopoly rights of the patentee.Therefore Amendment seeking to clarify the scope of the sensitising process by mentioning some sensitising material, namely tin does not lead to an altogether new invention Amendment merely clarificatory or elaborative.

Trade mark NEXXUS of the paalintiff having world wide presence . But the defendant engaged in the business of manufacture and trade of cosmetics, soaps, hair oil and other related products under name and style of Nexus Health and Home Care Pvt.Ltd defendant also stating that it is branding its products under trade mark SPA.

In the circumstances as a interim arrangement defendant restrained from using the trademark 'Nexxus' however defendant allowed to carry on its business under the trade name/trading style with condition that it shall not use the corporate name in any other manner which may be treated or may appear as a trade mark and submit quarterly accounts.

"It has been held by the court in a number of cases that at the initial stage of the suit, only the allegations made in the plaint are to be looked into while determining whether the Court has jurisdiction to try the suit or not. In M/s. International Film Distributors v. Sh. Rishi Raj, MIPR 2009 (2) 108 : 2009 (39) PTC 173 (Del.), a Division Bench of this court held as under:

"7.......The question as to whether the Court has territorial jurisdiction to entertain a suit or not has to be arrived at on the basis of averments made in the plaint, that truth or otherwise thereof being immaterial as it cannot be gone into at this stage....."

Looking at the averments made in the plaint by the plaintiff, I am of the considered opinion that this court has jurisdiction to try the suit. As a result, the defendant's application under Order VII Rule 11 CPC is hereby dismissed."

IA. No. 2423/08 under Order XXV Rule 1 of the defendant dismissed with Rs 5000/- as costs.

Tuesday, January 26, 2010

HELD that no doubt appellant should comply with all the technical objections within first six months or any other reasonable period and resubmit the documents with all necessary amendments

Rule of

(i) audi alteram partem

"Earlier it has been held that the Controller is not a court or tribunal as per the case "Martin and Botling developments Ltd's DPD 356" and so the provisions of CPC are not applicable to him. If that be the case, the respondent could have very well relaxed the conditions of the section 80 of the Act and could have offered an opportunity of hearing to the appellant at his convenience before issuing this impugned order. Otherwise too it is very well cast on the learned Controller as an administering authority of the Patent Law, to have offered an opportunity of hearing to the applicant before taking any adverse decision on this application. In the present case, admittedly no notice was given to the appellant providing it a reasonable opportunity to defend its case. Not only that an opportunity of hearing notice was not given to the appellant, but even fresh objections were brought in the impugned order by the respondent, that have not been first communicated to the appellant so as to enable it to defend its case by presenting its views and observations. Moreover in the impugned order the respondent has categorically refused to grant the opportunity of hearing to the appellant under section 80 of the Act by taking the plea that there was inordinate delay in resubmission. The impugned order under consideration has been undisputedly made without affording an opportunity of being heard to the appellant, and that order does affect the appellant adversely."

Therefore the impugned order made without affording an opportunity of being heard Impugned order, set aside

"It appears that the submissions made involve the interpretation of the clauses in the agreement in order to determine whether the arbitration clause covers the present dispute. This Court is persuaded to hold that prima facie clause 2.1.2 does appear to cover the expression 'musical works' contemplated under Section 2(p) CR Act. This is, however, only a prima facie view taken for the purposes of determining whether the present applications under Section 8 should be entertained and the parties to be referred to arbitration. The court is at this stage not required to express a final view on this aspect. Given the scheme of the Act and the scope of the powers of the arbitral tribunal under Section 16 it is for the arbitral tribunal to decide this question. The better course is that the parties should be referred to arbitration and all the points urged by the Plaintiff concerning the scope and ambit of the arbitration clause can be urged before the arbitral tribunal."

The complaint which was essentially about violation of the complainant's registered design was made to appear as if the infringements were of its trademarks and copyright

HELD "The IO appears not to have considered either Section 15 (2) of the Copyright Act or the relevant provisions of the Designs Act, 2000 or the fact that the Respondent No. 2 in fact holds the registration of the design in respect of its products. Respondent No. 2 admittedly held four registrations under the Designs Act in respect of the product in question even as of that date. Under Section 15 (2) of the Copyright Act, a copyright granted in respect of a product for which a registration has been granted under the Designs Act, would cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright. There can be no manner of doubt that the product of Respondent No. 2 has been reproduced more than 50 times. Therefore, any copyright in such design would cease by operation of law. "

In the considered view of this Court, the FIR and chargesheet when examined as a whole do not even prima facie make out a case for violation of the Copyright Act 1957. In other words, the offence under Section 63 of the Copyright Act is not even prima facie attracted. FIR and all proceedings consequent thereto, quashed.

Dispute as to certificate of search of trade mark "Bharat Marshal" — Resemblance of the two marks, which is likely to cause deception or confusion

HELD " in the present case I need not go into details and leave it open to the Registrar of Trade Marks to go into the question of resemblance and deceptive similarity as used in sub rule 1 and 3 of the Rule 24 of the Trade and Merchandise Marks Rule, 1959 as the matter is being remanded back. It is apparent that the Registrar of Trade Marks has given contradictory reports and the certificate dated 28th July, 1995 issued to the respondent No. 7 was without examining the earlier marks, which had been registered on the date when the application under TM Form No-60 was filed by the respondent No. 7 and when certificate was issued. The Registrar of Trade Marks will re-examine the matter in the light of the reports submitted by the Registrar of Trade Marks on the search carried out on the request of the petitioner. The impugned certificate dated 28th July, 1995 is accordingly quashed and set aside and the matter is remanded back to the Registrar of Trade Marks to re-examine the Form TM-60 filed by the respondent No. 7 and pass an appropriate order".

Copyright Act, 1957Section 52(l)(m) — Copyrights of scripts, books, publications re-publication of the works of E.V. Ramasami (Popularly called as Periyar)HELD The author of Kudiyarasu, i.e. Late Periyar, was the owner and the articles published in the newspapers mostly related to the then existed economical, political, social and religious topics. Therefore, unless the author had expressly reserved his right of reproduction, no copyright will vest with anyone as reproduction of such articles cannot constitute an infringement of copyright as per Section 52(l)(m) . Reproduction in a newspaper, magazine or other periodical . Unless the author had expressly reserved his right of reproduction, no copyright will vest with anyone as reproduction of such articles cannot constitute an infringement of copyright . Copyright in literary materials can only be an intellectual property and there has to be material to show that it was specially assigned—No written or other materials to show that a copyright reserved by author of those articles and that he also assigned it in favour of the plaintiff . Unless it is shown that they intend to reproduce pre-existing works, an order of injunction cannot be granted on the basis of apprehension and unsubstantiated allegations . Plaintiff failed to establish any ownership of the copy right in their favour and a corresponding infringement of copyright on the part of the respondents. Application for interim injunction, dismissed.

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Copyright Act, 1957Section 63 — Plaintiff engaged in the business of manufacturing and marketing audio cassettes, video cassettes, compact disks, televisions, CD Players, fans, mineral water and various other products . Defendant illegally exploiting the sound recordings as well as the lyrics, musical compositions and music videos that are copyrights of the plaintiff . Defendants in continued breach of the plaintiffs copyrights and are seeking to unfairly gain an advantage over other Cable TV operators who have recognized the plaintiffs copyrights and have entered into valid public performance license agreementsHELD "I hereby restrain permanently all the other defendants, their officers, servants, agents and representatives and anyone acting for or on their behalf from engaging themselves or authorizing the public performance or communicating to the public or in any other way exploiting films, sound recordings and literary works (lyrics) and musical positions or other work or part thereof of the plaintiff."

Trade Marks Act, 1999Section 27 Passing off. "DABUR Dashmularishta" and "DABUR Ashokarishta" Sufficient evidence adduced by the palintiff to prove that the plaintiff is only the proprietor and prior user of the labels are of the palintiff. Labels of the defendant are simple imitations or substantial reproductions of the plaintiffs labels therefore the profits of the defendant are the losses suffered by the plaintiff.

HELD that the defendant must be directed to produce its account books. Compensatory damages awarded .The ploy of defendant is that it simply picked up the label in the advertisement of the plaintiffs product and used it as their label for 'Dashmularishta' . Suit decreed in terms of Para 21 (i), (ii and (iii) of the plaint with costs along with damages to the tune of Rs. 1 lac as against the relief of Para 21 (iv) of the plaint. The decree be drawn accordingly.

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Trade Marks Act, 1999Section 29

Deceptively similar " For a deceptive similarity, the resemblance must be such as to be likely to . deceive or cause confusion. What degree of resemblance is necessary is, from the nature of things, a matter incapable of definition a priori. Each case must depend upon on its own facts and circumstances, in the considered opinion. The risk of deceptive and confusion ought not to be fancifully and it must be a real one the decree of similarity of the two marks in sight and sound, looking not just at the registered mark as a whole but also at its salient or essential features or the idea behind it, the whole range of potential customers for the goods protected by the registered mark, and not just customers for the goods of the particular type marked by the defendant, the nature and kind of customer likely to purchase the plaintiffs' and defendants' goods; the manner in which the purchasers of the goods are generally made."

Name and style "Shri Pattathu Amman Textiles" the offending mark trade mark consistent of a device of an Aeroplane with the word Jet brand reputed in English, Tamil and Hindi in blue, red and yellow colour combination . However defendant doing the business under the name and style of 'Naya Jet Brand Lungies' Sri Periyur Amman Textiles from 16.7.1999 onwards in the name of 'QUEEN JET BRAND' therefore deceptive adoption of device of the Aeroplane.

Trade Mark Act, 1999Section 29

The respondent/defendant has tated that he has commenced his business with the label 'NAYA JET BRAND' on 01.2.1997 having entirely different from the quality of plaintiff such as 'NAYA JET BRAND' with different colours and figures of the figure brand represented in English, Tamil and Hindi in dark blue, orange, red and yellow colour with attachment of each figures of 'NAYA JET BRAND' colour combination and also a plea to the effect that there are lot of differences of the figures of'JET BRAND' of the plaintiff and 'NAYA JET BRAND' of the defendant in all aspects a cursory look of the appellant/plaintiffs label Ex.A. 1 and the Ex.A. 3 label of the respondent/defendant, this Court is of the considered view that the respondent/defendant has adopted the appellant/plaintiffs label Ex.A. 1 with small/minute changes in regard to the visual of flying of aeroplane and adding a word 'NAYA' before the word 'JET BRAND' in English and further there is phonetic similarity of'JET BRAND' except the word 'NAYA' and these will not alter the situation in any way in favour of respondent/defendant including the one the respondent/defendant even selling the lungies in the name of 'QUEEN JET BRAND' from 16.7.1999 with a device of aeroplane flying will not enure to his benefit and accordingly, this Court holds that the respondent/defendant with a dishonest intention has adopted the trading style label similar to that of appellant/plaintiff and has practised deception and has committed an act of passing off infringement of trade mark of the appellant/plaintiff and resultantly, the appellant/plaintiff is entitled to the relief of permanent injunction restraining the respondent/ defendant, his men, agents etc. claiming under him from using or attempting to use or enabling others to use the word NAYA JET the devise of the aeroplane or in combination thereof and (or in any other Trade Mark identical or deceptively similar or in any other manner infringing the plaintiffs Trade mark registered in Regn. No. 467004 in clause 24 in respect of Textile cloth including lungies and further that the respondent/defendant is directed to produce before the trial Court all his accounts of sales and profits from the year 1996-1997 for determining the damages/compensation payable by him to the appellant/plaintiff and in this regard, the appellant/plaintiff is directed to file necessary application by means of separate proceeding and the trial Court shall determine the same in the manner known to law and the points 1 to 4 are answered accordingly thereby perforcing this Court to interfere with the findings rendered by the trial Court and consequently allows the appeal to promote substantial cause of justice.

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Trade Marks Act, 1999Section 29(4)(5) —Suit for permanent injunction restraining infringement of trademark, passing off, damages, delivery of accounts . Plaintiff is the proprietor of the trademark SASKEN and of its logo it has world wide presence.Defendant working under the name and style of Sasken Biotech Pvt. Ltd.HELD "I accept the contention of the learned counsel for the plaintiff that the trademark "Sasken" is an invented word and the defendants have no jurisdiction to use the same either as a trademark or as part of their corporate name in relation to pharmaceutical goods of any kind. The defendants are thus guilty of infringement of trademarks within the meaning of Section 29(4)(5) of Trademark Act, 1999. As regards the case of passing off, it is well established law that no actual confusion and deception is necessary in order to prove the case.Therefore relief of Rs 2 lac as punitive damages and cost of the suit awarded.

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Trade Marks Act, 1999, Sections 134 & 135Copyright Act, 1957, Sections 27(2) & 51Plaintiff not residing or working for gain in Delhi . Territorial jurisdiction Invocation of jurisdiction of Court on the basis of vague allegations that the goods of defendants were being sold throughout the country including Delhi makes no sense. Delhi court has no jurisdiction.

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Trade Marks Act, 1999Section 92Intellectual Property Appellate Board (Procedure) Rules, 2003 — Rule 14Rules of procedure, it is well settled, are handmaid of justice and are normally treated as directory and not mandatory unless legislative intent is opposite. Most of the procedural rules are enacted with the object to ensure expeditious trial and do not normally impose a prohibition and bar on the power of the court/tribunal to extend time. A prohibition or bar requires a penal consequence which should flow from non-compliance of a procedural provision.Therefore the application for taking on record additional documents should be allowed as IPAB has powers to regulate their own procedures but Rule permits and allows IPAB to extend the time for doing any act prescribed under the Rules whether such time as specified has expired or not . HELD Respondent filed six additional affidavits by way of evidence which have not been taken on record because of the delay . Further Held that one last opportunity should be granted to the petitioner and the respondent to file documents and also file affidavit by way of evidence in support of their cases . Impugned orders liable to be set aside.

Thursday, January 21, 2010

Code of Civil Procedure, 1908Order 17 Rule 1(2) . Injunction restraining from using the words 'HARA QILLA' and device 'QILLA' in bags/packets of rice as a trademarkDirections as to Decision of I P R cases:Experience shows that in the matters of trademarks, copyrights and patents, litigation is mainly fought between the parties about the temporary injunction and that goes on for years and years and the result is that the suit is hardly decided finally. This is not proper. Proviso (a) to Order XVII Rule 1(2)C.P.C. states that when the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for the exceptional reasons to be recorded by it, the adjournment of the hearing beyond the following day is necessary. The Court should also observe clauses (b) to (e) of the said proviso.We request the High Court that the suit in question should be decided within three months from the date a copy of this order is produced before the Trial Court.

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Code of Civil Procedure, 1908Order 17 Rule 1(2) — When the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for exceptional reasons to be recorded by it the adjournment of the hearing beyond the following day is necessary — Instead of deciding the case at the interlocutory stage, the suit itself should be disposed of finally at a very early date.Infringement of patents — Interim order — Suit pending for long time — Suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction — Matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the Trial Court instead of merely granting or refusing to grant injunctionRespondent shall be entitled to sell its product but it shall maintain an accurate records/accounts of its all India and export sales — No adjournment whatsoever ordinarily will be granted and the suit shall be finally disposed of on or before 30th November, 2009.

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Code of Civil Procedure, 1908Decision of IAs by plaintiff and defendants being IA. No. 2861/2009 under Order VI Rule 17 and Order I Rule 10 of the Code of Civil Procedure, 1908 and IA. No. 12490/2008 under Order XXXIX Rules 1 and 2 of the Code have been filed by the plaintiff. Defendant No. 1 has filed IA. No. 13904/2008 and IA. No. 13905/2008 under Order VII Rule 11 and under Order XXXIX Rule 4 of the Code respectively.Jurisdiction of Court Section 20, Code of Civil Procedure, 1908 read with Trade Marks Act, 1999 Section 134Section 20(c) read as under:"(c) the cause of action, whole or in part arises."A bare reading of this provision leaves no room for any doubt that the present suit for injunction filed at this Court lies within its jurisdiction as the cause of action has arisen wholly or partly within the local limits of the same. No doubt, Section 20 has been codified for the purpose that the matter be tried as near as possible so that the defendant is not put to any inconvenience as regards expenses of travelling from long distances in order to defend himself. In the present case, according to the plaintiff company the suit is maintainable since a part of cause of action had accrued within the territorial jurisdiction of Delhi courts on the ground that the defendant is carrying on its business in Delhi, the defendant has issued a news article in the Delhi edition of Times of India, the defendant has a factory at Shivaji Marg, New Delhi and the defendant No. 3 who has been impleaded also resides in Delhi. It is no doubt true that the suit could have been instituted in Mumbai itself where the defendant has its registered office, but this fact however does not take away the right of the plaintiff to file its suit in this court as part of the cause of action has arisen here. In the present case it is specifically alleged by the plaintiff company that the plaintiffs rights have been violated in Delhi. Learned counsel has also argued that by means of the notice sent by defendant No. 1 the plaintiff has been threatened in Delhi, therefore, at the prima facie stage this Court is of the considered view that this court has jurisdiction to entertain the present suit.

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Code of Civil Procedure, 1908Order 39 Rules 1 & 2If we go by the family settlement/arrangement, there is a primafacie, case in favour of the appellants who are plaintiffs in two civil suits, as, after 31.3.96, the respondents are not entitled to use the trade mark "Kangaro". If we go only by the Retirement Deeds, excluding the family settlement/arrangement from consideration, the respondents who are plaintiffs in one suit have a prima facie case to exclusive use of the trademark "Kangaro". Keeping in view the fact that (i) trade mark "Kangaro" was being used more or less as a family trademark till 31.3.1995; (ii) both the groups are using this trademark since prior to 7.1.1997, when status quo order was passed; (iii) No serious effort was made by the respondents for vacation of status quo order dated 7.1.1997, even after dismissal of SLP of the appellants in the proceedings arising out of CO. No. 4/97; (iv) both the groups have substantial turnover from use of the trademark "Kangaro", though turnover of the respondents is stated to be much brighter than that of the appellants, (v) In some countries the appellants are using this trade mark while in some other countries it is being used by the respondents; (vi) the court can take a final view on the nature, admissibility and applicability of the documents termed as family settlement/arrangement by the appellants and proposal/counter proposal, by the respondents, only after recording evidence, to be adduced during trial, we direct as under:(1) During pendency of these suits, the parties shall maintain the status quo, as it existed on 7.1.1997, as regards use of the trademark "Kangaro", but, in order to ensure that there is no confusion as regards the manufacturer of the product they shall also prominently display the name of the manufacturer on the box in which the product reaches the ultimate customer.(2) Both the groups shall maintain and file, in court, quarterly un-audited accounts of the turnover, gross profit and not profit from manufacture and sale of the products sold by them under the trademark "Kangaro", so that the group which ultimately succeeds can recover suitable damages from the other group. The accounts should be filed within 90 days of the close of each quarter. They shall also file annual audited accounts, containing the same information, by 30th June each year. The Appeals stand disposed of. The observations made in this order shall not affect or influence the decision of the suits on merit.

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Civil Procedure Code, 1908Order 39 Rules 1 and 2Plaintiff obtaining ex parte injunction by completely suppressing in the plaint that vide written agreements dated 19th August, 2002 and 20th September, 2002 (filed by the defendant No. 2 along with written statement), the plaintiff had agreed to be the authorised stockist of the defendants and the said agreements were executed on the letter-head of the defendants, which clearly mentioned the name/mark 'PRINCE Auto Industries'.Howevre plaintiff using the distinctive trademark 'PRINCE' in respect of accessories for use in cars as registered owner. Defendant had been dealing in auto accessories and had made a mark in its field of activity well before the plaintiff got registered the trademark 'PRINCE'Conduct of the plaintiff unbecoming of the confidence impliedly imposed by the Court in a plaintioff to state material facts.HELD Sale figures of the defendant No.2 were nearly four times the sale figures of the plaintiff Interim orders, vacated alongwith other directions.Code of Civil Procedure , 1908Order 39 Rule 3HELD" that for passing an ex parte order the Court is required to record reasons that the object of injunction would be defeated by delay. No such reason and indeed no reason whatsoever has been recorded in the impugned order. Furthermore, we have noticed the fact that on merits also the appellant had issued a legal notice to the respondents in the year 2003, the reply to which did not state that the application for registration, filed by the respondent was in the year 1996, though it was stated in the said reply that the i user of the respondent/plaintiff was from the year 1992. In these circumstances, the veracity of the averment regarding the application of 1996 filed by the respondent/plaintiff was required to be looked into seriously before any order was passed granting an injunction which stops the business of the appellant in the disputed product."Order of the learned Single Judge, set aside.

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Code of Civil Procedure , 1908Order 7 Rule 11 — Rejection of the plaint sought on the grounds that constituted attorney is an advocate in same case.HELD " I am of the view that the issue of dual capacity as raised by the applicants is mere a technical irregularity, which does not affect the root cause of the issue as raised in the original suit, it would not cause any prejudice to the non-applicants if allowed to get cured. There is no legal bar to an advocate being appointed as a constituted attorney by a party for the purpose of a case. Moreover there is no suggestion of there being any mala fide."Application dismissed.

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Civil Procedure Code, 1908Order 11 Rules 1 and 12HELD "The entire case of the revision petitioner rests on the basis of their enquiry conducted in the matter which resulted in getting the alleged information about the imitations of their branded pen both in design and in shape. Therefore before granting permission to serve the interrogatories, the trial Court was expected to look into the questions for the purpose of arriving at a conclusion as to whether the revision petitioner should be compelled to disclose their nature of evidence in the suit. It is trite that a party is not entitled to serve interrogatories with a view to collect materials which would constitute the evidence of the opposite party. This provision is not a short cut for a party to win the case. The order of the trial Judge does not disclose that the basic requirements for permitting' service of interrogatories were considered in the matter.The suit is also ripe for trial and in such circumstances, whether it was necessary to deliver the interrogatories with the questions as contained in the application in IA. No. 25 of 2002 was also not considered by the learned trial Judge. Therefore I am of the view that the entire issue need to be considered by the learned trial Judge afresh."Impugned order set aside.

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Code of Civil Procedure , 1908Order 39 Rules 1 & 2Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit.

Wednesday, January 20, 2010

Drugs and Cosmetics Act, 1940Sections 17-B & 17-D 'JOLEN" Permission/approval granted to respondent for manufacturing cosmetics under the Trade Mark "JOLEN". Claim that it was spurious .HELDThe Drugs Controller has not committed any illegality in granting licence to R-2 for manufacture of cosmetics under the trade name JOLEN, merely because the said trade name stands registered in the name of the petitioner, in the light of the facts of this case, particularly when the said "registration" is of no use and not into effective operation, by force of law. This Court finds no merit on the objections of the petitioner on this issue. There is no fault in the order of R-l dated 1.12.2007. It is once again clarified that any observations made by this court on the trade mark dispute fleetingly will not be taken as any observations of this Court on that dispute. The writ petition is, however, liable to be dismissed and is dismissed as such. No order as to costs. It is not within the-scope and powers of the Drug Controlling Authority to examine as to whether any action of infringement or passing off is taking place between two rival contenders Non-disclosure of some facts by respondents are not so material so as to call the action as fraudulent, and to wrest away the licence Madras High Court granted injunction in favour of Rival mark . Entire case of the petitioner rests on "registration" of the trade mark, but he did not initiate any action of infringement rather action initiated by the rival against the petitioner. Held that there is no illegality in granting licence for manufacture of cosmetics